Back in June, I wrote about Kernel Records Oy v. Mosley, where a Norwegian chiptune producer sued hip-hop producer Timbaland for allegedly sampling one of his tracks (“Acid Jazzed Evening”) without permission, using it in the track “Do It” by Nelly Furtado.

In somewhat of a twist, the court granted summary judgment in favor of Timbaland since Kernel Records had not timely registered its copyright. Although foreign copyright owners are generally not required by US law to register their copyright with the US Copyright Office as a prerequisite to filing an infringement suit, the magistrate judge noted that the Copyright Act does require registration when the work is published “simultaneously in the United States and another treaty party” — and since the judge found that Kernel had first published its work on the Internet, this amounted to a simultaneous publication that triggered the registration requirement.

Only one other court had previously confronted the issue of whether first publication on the Internet triggers the registration requirement for foreign copyright holders under this statute, and that court held that it doesn’t. 1Moberg v. 33T LLC, 666 F.Supp.2d 415 (D. Dela 2009).

Kernel Records quickly filed a notice of appeal with the Eleventh Circuit and last week filed its appellate brief with the court, embedded below. (Link).

[scribd id=64219598 key=key-2inkrzrc0dgmemzdv4p3 mode=list]

In the well-argued brief, Kernel says that the court’s interpretation of the Copyright Act’s registration requirement was incorrect. It also raises two other issues. It argues that the district court should not have dismissed its claim so quickly for failure to register its copyright — Kernel eventually did register its copyright on March 31, 2011, but the court denied its motion to amend its claim to reflect this fact. Kernel also argues that the court erred in granting summary judgment since there was a factual dispute over whether the work was even first published on the Internet in the first place.

The last point is interesting, as it seems to involve a faulty reading of a transcription from a deposition where two people are speaking at the same time — one of whom doesn’t speak English as his primary language. Kernel raises some policy issues with its second argument that are worth taking a look at. But it’s the first point that seems to me to be the main attraction in this appeal.

While copyright protection automatically vests in a work as soon as it is in a fixed medium, under the US Copyright Act, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 217 USC § 411(a). The Copyright Act states that

For purposes of section 411, a work is a “United States work” only if—

(1) in the case of a published work, the work is first published—
(A) in the United States;

(B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;

(C) simultaneously in the United States and a foreign nation that is not a treaty party; or

(D) in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States 317 USC § 101.

The lower court held that “publishing AJE [Acid Jazzed Evening] on a website in Australia was an act tantamount to global and simultaneous publication of the work, bringing AJE within the definition of a “United States work” under §101(1)(C) and subject to §411(a)’s registration requirement.”

Kernel Record’s first argument in its appeal is that this holding interprets the statute incorrectly.

The statute specifies four ways a published work qualifies as a United States work, three of which are relevant to the inquiry herein. A work is a United States work under Definition 1(A) if it is first published in the United States; under Definition 1(B) if it is first published simultaneously in the United States and a longer-term party or parties; and under Definition 1(C) if it is published in the United States and a non-treaty party. 17 U.S.C. § 101. Definition 1(D) is inapplicable as it is undisputed the author of AJE, Gallefoss, is not a national, domiciliary, or habitual resident of the United States.

Kernel notes that the statutes use of “only” means that these four definitions are exclusive — it notes the familiar interpretive canon of expressio unius est exclusio alterius (“the mention of one thing implies the exclusion of another”). Thus, a work first published simultaneously in the US and a treaty country with a longer copyright term is a US work under (B), but a work simultaneously published in the US and a treaty country with a shorter term — or a work published in the US, a treaty country with a longer term, and a treaty country with a shorter term — is not.

If posting a work online, then, results in “simultaneous global publication”, it does not fall within this definition of a US work. Posting a work on the Internet amounts to publication in every country with Internet access, as Kernel notes. This would include treaty parties with shorter terms, treaty parties with longer terms, and non-treaty parties, and none of the definitions of a US work includes all of these together.

It’s a strong argument, and one that is bolstered by Kernel’s second argument: this interpretation tracks the Berne Convention’s definition of “country of origin” in Article 5(4). The legislative history of the Berne Convention Implementation Act is explicitly clear that it was Congress’s intent to do so. As Kernel points out, “The District Court‘s interpretation unnecessarily creates a conflict between United States law and the very treaty the United States was attempting to implement.”

Given that Kernel Records has solid arguments for this and the other two issues it has raised, I think it’s likely that the Eleventh Circuit will remand back to the lower court, where the litigation will move forward. Mosley has 30 days to file his reply brief.

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Copyhype provides news and info on current developments relating to copyright law, the media industries, and the digital economy. It cuts through the hype to bring reasoned discussion aimed at both legal and nonlegal audiences.

Terry Hart is currently VP Legal Policy and Copyright Counsel at the Copyright Alliance. Any opinions expressed on this site remain his own and not necessarily those of his present or any past employers.